Contech Building Products Ltd v James Walsh, Contech (Northern Ireland) Ltd

• Jurisdiction: Ireland
• Court: High Court
• Judge: Ms Justice Geoghegan
• Judgment Date: 17 February 2006
• Neutral Citation: [2006] IEHC 45
• Docket Number: 462P/2006
• Date: 17 February 2006

[2006] IEHC 45

THE HIGH COURT

462P/2006

CONTECH BUILDING PRODUCTS LTD v WALSH & ORS

BETWEEN

CONTECH BUILDING PRODUCTS LIMITED

PLAINTIFF

AND

JAMES WALSH, CONTECH (NORTHERN IRELAND) LIMITED AND C-TECH NI LIMITED

DEFENDANTS

MISS WORLD LTD v MISS IRELAND BEAUTY PAGEANT 2004 IR 394

RECKITT & COLMAN PRODUCTS LTD v BORDEN 1990 1 AER 873 1990 1 WLR 499

MITCHELSTOWN CO-OPERATIVE AGRICULTURAL SOCIETY LTD v GOLDEN VALE FOOD PRODUCTS LTD UNREP COSTELLO 12.12.85 1985/9/2534

WESTMAN HOLDINGS LTD v MCCORMACK 1992 1 IR 151

INJUNCTIONS

Interlocutory

Passing off - Goodwill - Misrepresentation - Business name - Whether fair question to be tried on passing off - Whether damages adequate remedy - Whether balance of convenience in favour of granting injunction - Miss World Ltd v Miss Ireland Beauty Pageant Ltd [2004] 2 IR 394 applied - Interlocutory injunction granted (2006/462P - Finlay Geoghegan J - 17/2/2006) [2006] IEHC 45

Contech Building Products Ltd v Walsh

Facts: The defendants were accused of passing off in this jurisdiction goods which were, by agreement, to be sold and distributed by the plaintiff. An injunction was sought to restrain this activity. The defendants distinguished their product by use of the name “C-Tech” and not using the name used by the plaintiffs, namely “Contech”.

Held by Geoghehan J in finding the principles laid down in Miss World Ltd v Miss Ireland Beauty Pageant [2004] IR 394 were satisfied; the balance of convenience favoured granting the injunction notwithstanding that damages would not be an adequate remedy should the plaintiffs lose their case.

Reporter: BD

EX TEMPORE JUDGMENT of

Ms Justice Geoghegan

delivered on the seventeenth day of February, 2006

1 This is an application for an interlocutory injunction seeking to restrain the defendants from passing-off certain products not sold and distributed by the plaintiff as the products of the plaintiff, in particular by the use of the names "Contech CT7" and "CT7trans".

2 Whilst the application is couched in more general terms, the focus of the application on the affidavits and in the submissions is a product which is a sealant sold under the name "CT7" by the defendant, and in conjunction with, over differing periods of time, under the name "Contech" or "C-Tech".

3 The background to the present dispute is well known to the parties, but what may be shortly stated is that between 1992 and May 2003, Mr Oliver Dunne, who is the Managing Director of the plaintiff and first name defendant, Mr Walsh, were together involved in business through a number of Northern Ireland companies and companies in this jurisdiction. It appears that in the summer of 2003, they went their separate ways and reached and entered into an agreement in July 2003, which provided essentially that Mr Walsh took over the ownership and running of the Northern Ireland companies and Mr Dunne that of the companies in this jurisdiction. That agreement included a non-compete clause for two years.

4 The plaintiff company is, stated by Mr Dunne on affidavit, to have been in the business of selling and distributing maintenance products in the building and allied trades market and, in particular, since November 2003 has marketed and sold a product range known as the "7 range" and, in particular, products known as "Tech 7" and "Trans 7", which are distributed by Novatech NV of Belgium; the plaintiff has the exclusive right to distribute those products in Ireland. Those products are used to bond and seal in the building industry and are sold in 310ml tubes.

5 Mr Dunne has averred that he became aware, in October 2005, that the defendants were importing sealant from a company of the Netherlands called "Hercuseal BV" into Northern Ireland, and he subsequently became aware that this product was being sold by one or other of the defendants in this jurisdiction as "CT7". He also became aware that the defendants were using leaflets which, it is alleged, contain, on one of the pages, wording which is substantially the same as the wording used by the plaintiffs in the leaflets provided with the "Tech 7" sealant.

6 The plaintiffs, through their solicitors, wrote initially on the 22nd November to the first named defendant alleging passing-off and there was further correspondence then with the second and third named defendants in December, and these proceedings were commenced on the 2nd February and an immediate motion brought seeking an interlocutory injunction.

7 The plaintiffs allege that the defendants, in the manner of get-up of the sealant product "CT7", are passing-off and refer, in particular, to the similarity of the tubes; the use of the number "7" in the name; the position of the number "7" in the name after the letters and at the commencement of the sales, the use of the word "Contech" in a prominent position on the product.

8 The defendants have responded by stating on the facts that they are no longer using the word "Contech", and are now using the word "C-Tech" on the top of the product. The two tubes were produced in the course of the interlocutory application.

9 In considering an application for an interlocutory injunction, this court has a rather limited function in relation to the disputes at issue. There was substantial agreement between counsel for the respective parties as to the applicable principles, and I think I may shortly state that I can do no better than follow the approach of Laffoy J inMiss World Limited v. Miss Ireland Beauty Pagent 2004 I.R. 394. In that judgment, Laffoy J at page 39 summarised the function of the court in such an interlocutory application as being:

"…to determine whether:-"

10 (a) the plaintiffs have raised a fair and bona fide question to be tried;

11 (b) if they have, in the event of being refused an injunction and succeeding in the action, they would be adequately compensated by damages;

12 (c) if they would not, in the event of the injunction being granted and the plaintiffs failing to succeed in the action, the defendants would be adequately compensated by damages; and

13 (d) the balance of convenience lies in favour of granting or refusing the injunction."

14 The first question then is whether the plaintiffs have raised a fair and bona fide question to be tried. The allegation is that the defendant is passing-off, or seeking to pass-off, its goods as those of the plaintiff. Again, it appears to me that the approach of the court to this question is well set out in the same judgment of Laffoy J, where she followed the three part test formulated by Lord Oliver inReckitt and Coleman Products Limited v. Borden inc 1990 1 W.L.R. 491 at page 499.

15 Lord Oliver, I am not going to quote the entirety of the passage, summarised a three part...